AuthorTopic: Recent Patent Bar Question Collective (Read 22831 times)

This will be a topic where hopefully all the recently encountered questions will be listed, and those who recently took the exam will be able to post answers to those questions. Collecting the questions will be done for the benefit of the Patent Bar test-taking public, so please help out by contributing.

Furthermore, there currently exists a site that lists recently tested patent bar exam questions at: patentbarquestions DOT com, started as an off-shoot of this forum. However, hopefully this collective will be able to supplement that page (by updating the "Questions Reportedly Asked" section, and also listing all the recently encountered Exam questions here.

For starters, here are some questions that people are looking for answers to:

The Titanium Baseball Question:A question involving public use if patrons are able to view information concerning a patented titanium baseball.

The Mirror Question:A question involving whether a reflective qualities of a mirror have to be included in the specification.

The VELCRO Question:Concerning the proper use of the VELCRO trademark in a patent application - whether it comports with the proper rule for trademarks.

-A Question Involving Hairgel, and inventors named Buzzy, or Razor-A Question involving the submission of private prior art involving a Joe and a Bob-A Question involving fraud/disclosure of information involving whether one has to disclose a District Court decision on a patent-A Question involving Cleaning Soda / Cleaning Product-A Wireless Phone Question-A Question involving an inventor named Lance and 102/103.

There is one question discussing the use of "mirror" in the claims and whether its "reflective qualities" should be discussed in the specification. I am not sure if this was a prior question, however. You were to choose from a list of choices a single answer that comported with USPTO practice and procedure.

Among the answers (from memory): (A) because the definition of mirror automatically includes its reflective qualities, there is no need to amend the specification to include the reflective qualties (E) the mirror in one part of the specification is "parallel," and the mirror in another part is "perpindicular," the specification is conflicting and one who has knowledge in the art would not be able to tell the difference so you amend the specification. Did anyone get this question and what would the answer be?

ANS:It is A, reflective qualities, as a general term, would be inherent, and not need to be discussed. Whether it is positioned parallel or perpendicular has nothing to do with its reflective qualities, and on top of that, would likely be obvious. If it possessed "special" reflective qualities, that would not be known to one skilled in the art, that would be different and need to be included, so that it could be enabled to be claimed later.

2. Titanium /Museum Baseball Question

A question involving an article about a special titanium baseball put on public display in a museum. The main question is: is it public use if only "wealthy museum patrons who have no interest or skill to make baseballs" see it? Or is it public use when the general public see it, or people who have the interest/skill to make baseballs can see it? In other words, the main question is: is something public use if ONLY the people having skill in the art can see it?

ANS:

It only requires that it be accessible to the public, and not hidden away in such a way that one cannot find it except by happenstance, whether people who are skilled in the art have happened to see it or not, as long as it is open to the public, is irrelevant.

The public is the public, it doesn't matter if they had to pay for admission, they don't belong to the same entity. Even if they aren't interested in the baseball, they could easily describe it to a baseball manufacturer who would be very interested.

its a 102(b) bar, due to the "public use" (thats right)when it was displayed to members of the museum.

based on MPEP 2133.03(a) II A. 2 see In re Blaisdell & Ex parte Kuklo Display in a laboratory --> public use doesn't have to be displayed to those skilled in the art. no need for all inner workings to be shown.

Compare to Moleculon (the rubix cube case) where the inventor did not cause a public use by leaving the cube on his desk.

Just go to the MPEP and read the section with Blaisdell and Kuklo, you'll see what they're testing. There were different times when the reference could have gone into effect, in this case (if I remember correctly) the baseball was displayed to the museum members over a year before the filing date of the application.

I just wanted to remind the people who unfortunately did not pass the test the first time (I belong to that group as of Jan 25, 2007 but hopefully not for too long) about the option you have to schedule a personal meeting with the PTO/OED to review the questions which you have answered wrong.Call 571-272-4097 after you have received your "NO" letter, to schedule the 2 1/2 hours with them.

I had my scheduled meeting today and received a warm welcome, was brought into a meeting room, and obtained the printout of all the "wrong" answered questions, with a person present at all times. They do not let you know the questions which you have answered correctly.I was not allowed to take notes but I had 2.5 hrs to read through the questions. It lists also what I have answered and what the right answer is. In addition, a detailed explanation is given, based on the MPEP, for each possible listed answer (similar to what you have in the previous questions published, up to 2003).

If you are close to Alexandria, VA, or if you have the time for a visit, this is your great opportunity to find out what you did wrong, and it is at no charge!

By the way, the correct answer for the baseball publication in the museum is the date of July 4th, the date when the publication was available in the catalog and on the shelf (July 4th).

I was asked for more details on current questions but the patentbar-questions site is pretty much current and up to date.

Something which is really helpful can be found on the PLI site,GOOGLE can guide you. Look up Patent Bar Review, Icon Exam, click on the box "previous exams and analysis".Download the analysis papers (just below the question listing for the year), has great explanations by John White, Esq., on all previous exam questions up to 2003. It's more the "real world" explanations, easier to read and to understand than the PTO justification on previous questions.

NeedHelp!

I took the exam previously and didn't pass - I really NEED to know the answer to this VELCRO trademark question, because I had it on the exam I took and I am still uncertain of the answer. If any of you knew the correct answer it would really help me out. The question is as follows:

The VELCRO trademark question deals with the rules about including trademarked names into an application. A claim in a patent application uses "VELCRO." The examiner rejected the app because of the usage. Among the answer choices are:

(A) maintain the VELCRO rejection because sufficient structure is not recited (B) maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener (C) do not object/reject (D) object to the trademark for being a trademark and request the applicant to modify the specification to include further structure (E) ... (don't remember, could be "none of the above")

I believe the answer to maintain the VELCRO question under 112 second paragraph (and say that the use of the VELCRO trademark is indefinite) because any use of trademark is indefinite under 112 second paragraph EVEN THOUGH VELCRO is a recognized trademark (it is even listed in the MPEP). Also see the section on trademarks:

7.35.01 Trademark or Trade Name as a Limitation in the Claim Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/ description is indefinite.

I took the exam previously and didn't pass - I really NEED to know the answer to this VELCRO trademark question, because I had it on the exam I took and I am still uncertain of the answer. If any of you knew the correct answer it would really help me out. The question is as follows:

The VELCRO trademark question deals with the rules about including trademarked names into an application. A claim in a patent application uses "VELCRO." The examiner rejected the app because of the usage. Among the answer choices are:

(A) maintain the VELCRO rejection because sufficient structure is not recited (B) maintain the rejection because VELCRO is a recognized prior art fastener, and this fastener would be obvious to replace with the current fastener (C) do not object/reject (D) object to the trademark for being a trademark and request the applicant to modify the specification to include further structure (E) ... (don't remember, could be "none of the above")

Much Thanks --

So is the answer A or is it D because the choices do not mention 112 indefinite?

Regarding Piecemeal Q, from what I read in previous posts, the whole para from chapter 7 was reproduced. Well, I looked it up, here is the para:

707.07(g) Piecemeal Examination

Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, how­ever, undue multiplication of references. (See MPEP § 904.03.) Major technical rejections on grounds such as lack of proper disclosure, lack of enablement, serious indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a major technical rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with some stereotyped expression.

In cases where there exists a sound rejection on the basis of prior art which discloses the "heart" of the invention (as distinguished from prior art which merely meets the terms of the claims), secondary rejections on minor technical grounds should ordinarily not be made. Certain technical rejections (e.g. negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved mode of definition.

Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:

(A) Where an application is too informal for a complete action on the merits. See MPEP § 702.01;

(B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP § 2173.05(n);

(C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP § 803, § *> 810<, § 812.01;

(D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm'r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinency pointed out without specifically applying it to the claims.

On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.